Appeal No. 1998-0318 Page 8
Application No. 08/539,466
Hulette provides no description of the sampling tube, but it appears from Figure 2 to
be in the shape of what might be called a conventional tube, that is, a right cylinder having
a rounded bottom. As such, this would constitute exactly the type of tube over which the
appellants believe their invention to be an improvement with regard to handling micro-
samples. At the very least, the Hulette tube differs from that recited in claim 23 in that it
does not have an inner portion with a convex curved slope. Charlton discloses a
tube for use in a centrifuge which has an end portion that is internally inwardly sloped to
define a convex curve, in the manner required by claim 23. Nevertheless, it is our view that
Hulette and Charlton fail to establish a prima facie case of obviousness with regard to the
subject matter recited in claim 23 for lack of suggestion to combine the references in the
manner proposed by the examiner. It is axiomatic that the mere fact that the prior art
structure could be modified does not make such a modification obvious unless the prior art
suggests the desirability of doing so. See In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). We fail to perceive any teaching, suggestion or incentive
which would have led one of ordinary skill in the art to replace the sample tube disclosed
by Hulette with that of Charlton. Hulette is concerned with monitoring changes in the optical
characteristics of a reaction volume in a sample tube (column 1, lines 28-36). While the
3(...continued)
Parmer, it appears to us from the examiner’s explanation of the rejection that the
secondary references are to be considered as alternatives.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007